TRADEMARKS

Overview of the Trademark Process

In Canada the trademark process takes approximately 12 to 24 months from the time of filing to the receiving a notice of allowance. The following is the typical process for applying for a trademark:

Trademark Search the first step is usually performing a search for any potentially conflicting trademarks. The searches can vary in how in depth they are depending on the clients needs and situation.

Preparing an Application after reviewing the search results if the client decides to proceed, we will require the following information:
a. a list of the goods and/or services with which they are using the trademark or plan to use the trademark;
b. if the trademark consists of a logo/design then a copy of the mark in a digital format is requested (usually as a TIFF, JPEG or PDF);
c . if possible, a copy of any document indicating the legal name of the company or organisation who will be applying for the trademark (we request this because there have been occurrences where an incorrect name has been provided and led to problems that incurred costs to be resolved);
d. if there has been a previous owner/user of the mark we need the legal name of the previous owner of the mark and when they used and for what goods and services; and
e. if there has been use of the trademark, a list of the goods and services the mark has been used with, when the first sale in association with the mark occurred with each good, and when the services were first advertised or performed in association with the mark (if possible please provide a copy of a receipt for the sale of the goods or provision of the services.) With the dates it is always better to be on the conservative side as proof of earlier use is helpful if your trademark is challenged but a later use date could cause your trademark to be invalidated.

Filing an Application once we receive all the required information an application could be drafted and filed in about a week. In an emergency an application could be filed in a day.

Prosecution of the Trademark:
a. Once the Application has been filed we usually receive a filing certificate in about a week.
b. It takes about 6 to 9 months for an Examiner to review the Application and for us to receive an Examiners report. These reports usually request a response within 4 months.
c. There may be 1 or more responses required depending on the issues the Examiner raises. This process may take as little as a couple of months or years depending on the Examiners objections to the mark.
d. Once the Examiner is satisfied with the Application it will be approved for advertisement. An approval notice is usually received in about a month. After the Application has been advertised other parties have 2 months in which to oppose the registration of the mark.
e. If the mark is not opposed a Notice of Allowance usually issues within about 5 months from the date of the Notice of Approval.
f. The Applicant then has to pay a registration fee within 6 months from the date of the Notice of Allowance, to register the trademark if they filed the application based on use. If the Applicant filed on the basis of proposed use the Applicant has the longer of 6 months from the date of the Notice of Allowance, or 3 years from the filing date.

In the case of marks already filed abroad or registered abroad, we need details of the foreign filing, preferably including a copy of the application as filed or the registration.

If an interested party decides to oppose the registration, perhaps on the basis that they have used a similar mark before, then opposition proceedings would start. An opposition is a mini-trial fought with written documents, and usually takes several years to resolve. If you do not like a decision of an examiner rejecting your mark, or a decision of the opposition board, you can appeal to the Federal Court.

It may in some cases be impossible to register the mark. The more you spend on searches before filing, the better you will be able to predict success. However, success cannot be guaranteed.

The entire process on average costs between CA$2,000-3,000 if no difficulties are encountered, and may be more. The expense if there are objections will depend on the work that has to be done to counter the objections.

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